How are claims held invalid by a federal court treated in reexamination proceedings?
Claims that have been finally held invalid by a federal court, after all appeals have been exhausted, are treated differently in reexamination proceedings. According to MPEP § 2659:
“Claims finally held invalid by a federal court, after all appeals, will be withdrawn from consideration and not reexamined during a reexamination proceeding.”
This means that if a court has definitively ruled that certain claims are invalid, and this decision has been upheld through all possible appeals, the USPTO will not reconsider these claims during a reexamination. They are effectively removed from the scope of the reexamination.
Additionally, the MPEP clarifies: “A rejection on the grounds of res judicata for such withdrawn claims will not be appropriate during reexamination.” This indicates that the USPTO does not use res judicata as a basis for rejecting these claims, but rather simply withdraws them from consideration.
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